Understanding The Patent Process
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This slide deck is prepared by Mindy Bickel, a USPTO employee since 1989. Mindy works with innovators, entrepreneurs and local educators in and around New York City, providing them with appropriate information and resources offered by the USPTO and the Department of Commerce. This slide was used for a CoInvent event on Sept. 4th, 2014.
Understanding The Patent Process
- 1. Understanding the Patent Process Mindy Bickel, Innovation Outreach Coordinator
- 4. Allowance Examination Process First First Examination Notice of Allowance Second Examination Rejection Response Second Examination Appeal Process Appeal Brief Abandonment
- 5. Parts, Form and Content Arrangement of Application • Title • Cross-Reference to Related Applications • Statement Regarding Federally Sponsored Research or • Development • Background of the Invention • Brief Summary of the Invention • Brief Description of the Drawings • Detailed Description of the Invention • Claims • Abstract • Drawings • Sequence or Computer Program Listings
- 6. Examination Patent Examiner will: •Read specification • Interpret drawings • Diagram claims • Search the prior art • Make legal/engineering determination • Write opinion (Office Action) -First -Final
- 7. Applicant Response • Amendment - Non-final • Right of entry - Final • No right of entry - Requirements • Answer all formal objections and rejections – Amendment or argument or both – Replacement paragraph, claims or drawing following rules – For more information on submitting a proper amendment, visit http://www.uspto.gov/patents/law/moreinfoamdtprac.jsp
- 8. Parts, Form and Content Claims • Must commence on a separate sheet • Must particularly point out and distinctly claim the subject matter which applicant regards as his/her invention or discovery • Must conform to the invention as set forth in the specification – there must be antecedence of the terms and phrases found in the written description for the claims • The claims shall be numbered consecutively in Arabic numerals • The original numbering of the claims must be preserved throughout the prosecution of the application – when claims are cancelled the remaining claims must not be renumbered
- 9. Typical Misunderstandings Pro se applicants: • Are not always aware of what protection a patent gives them; • Are not always aware of what the difference between a provisional patent application and a non-provisional application is; and • Often lack the necessary knowledge to draft their own patent applications (format, forms, fees, prior art search).
- 10. Typical Misunderstandings Pro se applicants: • Are challenged by the prior art and terminology used in Office actions; • Frequently fail to respond in writing in a timely manner or with the necessary fees; and • Frequently fail to ask for help!
- 11. Pro se problems Pro se vs. Represented Abandonment Percentage
- 12. Helpful Hints • Interview - Pro Se • Phone or in person - Attorney/Agent • Phone or in person • Inventor cannot have interview without attorney or agent present
- 13. Allowance and Issue • Fees - No extension of time permitted - To check current fee schedule: http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm • Amendments after allowance - Minor corrections, drawings, formal matters • Corrections - Inventorship, misspelled words • Time to publish patent
- 14. After Patent Grant Protection begins Maintenance fees - Due at 3.5,7.5 and 11.5 years Correction - Certificate of Correction - Reissue • Broadening • Narrowing
- 16. Ombudsman Program-Purpose • Facilitate complaint-handling when applications become stalled in examination process • Track complaints to ensure each is handled within 10 business days - Currently averaging 3 business days • Provide feedback regarding training needs based on complaint trends - FY13 Examiners will complete stakeholder responsiveness training
- 17. Ombudsman Program-Structure • Central Program Administration - Examiner Detailee • Ombuds Reps in Each TC - Senior SPEs - Experienced QAS • Ombuds Reps in all other business units (internal and external to Patents) • Coordination with Office of Innovation Development
- 18. Ombudsman Program-Process • Applicant/Attorney access through USPTO.gov website or 571-272-5555 • Ombudsman will call within one business day to obtain details • Complaint is routed to the person who can best address it (SPE, TC Director, etc.) • Ombudsman may or may not address the complaint directly
- 19. Pro Bono Program
- 20. Contacts For Direct Help • Inventor Assistance Center (IAC) - for general questions about the application process Telephone: (571) 272-1000 or (800) 786-9199 8:30 a.m. - 5:00 p.m., eastern time M-F • Office of Innovation Development: - (571) 272-8877 - independentinventor@uspto.gov
- 21. Resources • Comprehensive Information and Training Material for First Inventor to File: http://www.uspto.gov/aia_implementation/patents.jsp#heading-10 • Inventor Resources: http://www.uspto.gov/inventors/index.jsp • IP Awareness Assessment Tool: http://www.uspto.gov/inventors/assessment/index.html • Scam Prevention: http://www.uspto.gov/inventors/scam_prevention/index.jsp • Pro Se & Pro Bono: http://www.uspto.gov/inventors/proseprobono/index.jsp • Utility Patent Application Guide: http://www.uspto.gov/patents/resources/types/utility.jsp
- 22. Thank You! Mindy Bickel Innovation and Outreach Coordinator Greater New York Region United States Patent and Trademark Office Mindy.Bickel@uspto.gov www.uspto.gov/cornell